CAFC Weekly: March 18, 2011

by Orlando Lopez

March 18th, 2011

This week yielded one opinion relating to the awarding of sanctions and attorney’s fees, one order dismissing a false marking complaint and finally, a denial of hearing en-banc for a case on assignments and standing.

In Old Reliable Wholesale, Inc. v. Cornell Corp., Old Reliable owns a patent for insulated roof board and sued Cornell Corp. (not be confused with the University) for infringement. The District Court granted summary judgment of invalidity due to anticipation and obviousness, andOld Reliable appealed to the CAFC. On December 11, 2009, the CAFC upheld the District Court’s decision. While the appeal was pending, Cornell had requested that it be awarded attorney’s fees based on statements made at depositions. Additionally, Cornell had also filed at the USPTO, for re-examination of the patent at issue. The USPTO had issued a notice of intent to grant certification of validity and reversed based on the CAFC’s December 11, 2009 decision. On February 2, 2010, the District Court allowed Cornell’s request for attorney’s fees. Old Reliable appealed to the CAFC andthe CAFC reversed the grant of attorney’s fees. In reversing, the CAFC applied the standard that for sanctions to be imposed: (1) that the suit was brought in bad faith, or (2) that the suit was so unreasonable that no reasonable plaintiff could believe that it would succeed. While the CAFC reviewed the arguments presented at the District Court in order to show that Old Reliable had a reasonable expectation of showing validity of their patent, the re-examination proceedings at the USPTO also indicated that Old Reliable had a reasonable expectation of showing validity. The opinion shows how difficult it is to obtain attorney’s fees and also the unexpected effects of re-examination.

In another order, the CAFC denied en-banc rehearing of Abraxis Bioscience, Inc. v. Navinta LLC, a case that reinforces the fact of whether an assignment of patent rights is automatic or whether it is a promise to assign, it is dependant on the language of the assignment. The order is notable since Judge O’Malley, a recent addition to the CAFC, filed her first dissent.